Laspata DeCaro Studio Corporation v. Rimowa GmbH et al

Filing 239

OPINION AND ORDER re: 169 LETTER MOTION for Conference (Pre-Motion Conference in connection with motion for summary judgment) addressed to Judge Lorna G. Schofield from Gregory F. Hauser dated October 31, 2017. filed by Shotview Ber lin Photographers Management GmbH, 167 LETTER MOTION for Conference Pre-Motion Conference (Summary Judgment) addressed to Judge Lorna G. Schofield from Delphine Knight Brown dated October 31, 2017. filed by Rimowa GmbH, Rimowa Inc. , Rimowa Distribution Inc., 207 MOTION for Summary Judgment . filed by Laspata DeCaro Studio Corporation, 218 LETTER MOTION for Oral Argument on Defendants' Motions for Summary and Plaintiff's Cross-Motion for Part ial Summary Judgment on Liability addressed to Judge Lorna G. Schofield from Delphine Knight Brown dated January 22, 2018. filed by Rimowa GmbH, Rimowa Inc., Rimowa Distribution Inc., 168 LETTER MOTION for Conference (Pre-Motion Conference in connection with motion for summary judgment) addressed to Judge Lorna G. Schofield from Lisa Pearson dated October 31, 2017. filed by Meire GmbH & Co. KG, 183 MOTION for Summary Judgment . filed by Meire GmbH & Co. KG, 179 MOTION for Summary Judgment Notice of Motion Joining. filed by Shotview Berlin Photographers Management GmbH, 224 LETTER MOTION for Conference regarding a Motion to Strike the Declaration of Horst DiekGerdes (DI 201) addressed to Judge Lorna G. Schofield from Delphine Knight Brown dated January 22, 2018. filed by Rimowa GmbH, Rimowa Inc., Rimowa Distribution Inc., 188 FIRST MOTION for Summary Judgment . filed by Rimowa GmbH, Rimowa Inc ., Rimowa Distribution Inc., 170 LETTER MOTION for Conference re: Motion for Summary Judgement addressed to Judge Lorna G. Schofield from Maura J. Wogan dated Oct. 31, 2017. filed by Laspata DeCaro Studio Corporation.For the forego ing reasons, the parties' cross-motions for summary judgment are DENIED, Defendants' motion to strike the Diekgerdes Declaration is DENIED, and Rimowa's request for oral argument is DENIED as moot. The Clerk of Court is directed to close the motions at Docket Nos. 167-170, 179, 183, 188, 207, 218 and 224. (Signed by Judge Lorna G. Schofield on 6/20/2018) (kgo)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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LASPATA DECARO STUDIO COPORATION, :
:
Plaintiff,
:
:
-against:
:
RIMOWA GMBH, et al.,
:
Defendants. :
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6/20/18

16 Civ. 934 (LGS)
OPINION AND ORDER

LORNA G. SCHOFIELD, District Judge:
Rimowa GmbH, a luggage manufacturer, retained Meiré GmbH & Co. KG (“Meiré”) to
design an advertising campaign to promote its products. After the campaign’s launch, Plaintiff
Laspata DeCaro Studio Corporation (“Laspata”) brought the instant action against Rimowa
GmbH, its subsidiaries Rimowa Inc. and Rimowa Distribution, Inc. (collectively, “Rimowa”)
and Meiré, alleging that four images used in the campaign infringed Laspata’s copyrights. The
parties cross-move for summary judgment. The cross-motions are denied.
BACKGROUND
The facts below are drawn from the parties’ Rule 56.1 Statements and other submissions
on this motion, and are not materially disputed.
A.

Laspata and the Speechless Advertising Campaign

Plaintiff Laspata is a boutique creative marketing agency based in New York City, named
after its founders and co-owners, Rocco Laspata and Charles DeCaro. Laspata executes
photographic advertising campaigns for its clients, which include prominent luxury brands.
Laspata charges its clients various fees, including a retainer fee of $15,000 a month for a 12month minimum, a photography fee that ranges from $25,000 to $40,000 per day, a styling fee of
$3,500 per day and a production fee that ranges from $10,000 to $20,000 per photoshoot.

Laspata retains the copyrights to its photographs and licenses the images to its clients for limited
use over a limited period of time. Laspata does not license its photographs to third parties or
make its work available through photo licensing services because this would damage Laspata’s
client relationships and its ability to attract new business.
In 2012, Laspata conducted a photoshoot for its client Americana Manhasset, a shopping
center in Long Island, and created a “lookbook” (a collection of photographs assembled for
marketing purposes) called Speechless from the photographs. Mr. Laspata and Mr. DeCaro
formulated the idea for the Speechless lookbook and its associated advertising campaign while in
Los Angeles to attend the 2012 Academy Awards, in which the film The Artist won multiple
awards including Best Picture. The film served as an inspiration for the campaign, as did other
materials evoking Hollywood in the 1920s, including the films Sunset Boulevard and The Thin
Man, and various photography books. Laspata charged $516,000 for services related to the
photoshoot for the Speechless lookbook, and issued limited use licenses to Americana Manhasset
and Hirshleifers, a department store located in the shopping center.
B.

Rimowa, Meiré and The Journey Advertising Campaign

Defendant Meiré is an advertising, branding and design agency based in Cologne,
Germany. Rimowa Defendants consist of a German luggage manufacturer and its U.S.
subsidiaries. In March 2014, Rimowa hired Meiré to work on an advertising campaign and
lookbook for the 2015-2016 period. In May 2014, Rimowa was in the process of reconstructing
the Junkers F13, a German aluminum aircraft from the 1920s that served as the inspiration for
Rimowa’s metal luggage product lines. Rimowa instructed Meiré that the Rimowa lookbook
should feature the Junkers F13 aircraft and commercial air travel in the 1920s. The concept for
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the Rimowa lookbook eventually evolved into The Journey, a photographic story set in the
1920s, which Meiré principal Michael Meiré described as “the golden age of Hollywood and
commercial air travel.”
In the course of developing The Journey, Meiré conducted research, including internet
searches on photography websites, to familiarize itself with the 1920s aesthetic, and captured
screenshots of hundreds of photographs as possible inspiration and points of reference for the
Rimowa campaign. Meiré’s research materials included several Laspata photographs that
Meiré’s employees found online.
Meiré used Adobe Photoshop to create a series of collages of reference photographs in
order to create “mood images” for the photographs that were to be taken for The Journey
lookbook. Four of the mood images included elements of Laspata photographs combined with
photographs of Rimowa luggage. Laspata characterizes these mock-ups as “[a]ltered versions of
the [Laspata] photographs.” These images were circulated to various people working on The
Journey photoshoot, including the photographer, Horst Diekgerdes. Diekgerdes referred to these
images constantly during the photoshoot, trying to replicate them, including the four with
elements of Laspata photographs. Three of the four resulting photographs were included in The
Journey lookbook, and the fourth photograph was used by Rimowa in other marketing materials.
Rimowa also hired a camera crew to shoot footage of The Journey photoshoot set, which
was used to create a behind-the-scenes video for Rimowa. Mood images with elements of
Laspata photographs appear in the video, including two approximately three-second shots
zooming in on one of the images, which features a couple and a dog sitting on director’s chairs.

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In 2015, Rimowa used exclusively images from The Journey photoshoot, including at
least two that are based in part on Laspata photographs, in all its advertising worldwide. The
images appeared internationally in stores, billboards, advertisements in print and online
publications and Rimowa’s website.
C.

This Litigation and the Instant Motions

Laspata asserts that the four photographs taken by Diekgerdes with Laspata elements, as
well as the mood images on which they were based and the video footage showing these mood
images, infringe its copyrights. Count I of the Complaint pertains to the final photographs taken
by Diekgerdes and included in Rimowa’s promotional materials; Count II pertains to the mood
images; and Count III pertains to the video footage.
Laspata moves for summary judgment on the issue of liability for infringement as to
Count I.1 Defendant Meiré cross-moves for summary judgment on the issue that the allegedly
infringing photographs are not “substantially similar” to the Laspata originals under copyright
law. Meiré also moves for summary judgment on Count III, asserting that it was not involved in
making the video. Defendant Rimowa moves for summary judgment, asserting that Laspata

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It is unclear whether Laspata is moving for summary judgment as to Counts II and III.
Laspata’s opening brief in support of its motion seeks summary judgment “on the issue of
Defendants’ liability for copyright infringement” but does not raise arguments as to the mood
images or the video. Laspata’s memorandum of law limits its discussion of infringement to the
“Infringing Photographs,” a defined term that refers to the four photographs taken by Diekgerdes
at The Journey photoshoot. Nonetheless, Meiré’s opposition includes arguments that it is not
liable under Counts II and III, and Laspata addresses these arguments in its reply. Because
Laspata fails to advance affirmative argument for summary judgment as to Counts II and III, the
Court does not address these issues.
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cannot prove damages, and that Rimowa’s use of any mood images in the video is de minimis
and therefore not an infringement under copyright law.
STANDARD
A.

Summary Judgment

When parties cross-move for summary judgment, the Court analyzes the motions
separately, “in each case construing the evidence in the light most favorable to the non-moving
party.” Wandering Dago, Inc. v. Destito, 879 F.3d 20, 30 (2d Cir. 2018). Summary judgment is
appropriate where the record establishes that “there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). “A genuine
issue of material fact exists if ‘the evidence is such that a reasonable jury could return a verdict
for the nonmoving party.’” Nick’s Garage, Inc. v. Progressive Cas. Ins. Co., 875 F.3d 107, 113
(2d Cir. 2017) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). When the
movant has properly supported its motion with evidentiary materials, the opposing party must
establish a genuine issue of fact by “citing to particular parts of materials in the record.” Fed. R.
Civ. P. 56(c)(1)(A). “[A] party may not rely on mere speculation or conjecture as to the true
nature of the facts to overcome a motion for summary judgment.” Hicks v. Baines, 593 F.3d
159, 166 (2d Cir. 2010) (internal quotation marks omitted and alteration in original).
B.

Copyright Infringement

“In order to make out a claim of copyright infringement . . . a plaintiff must establish
three things: 1) that his work is protected by a valid copyright, 2) that the defendant copied his
work, and 3) that the copying was wrongful.” Zalewski v. Cicero Builder Dev., Inc., 754 F.3d
95, 100 (2d Cir. 2014). Copying is wrongful where two works are “substantially similar,”
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meaning that “similarity . . . exists between the protected elements of a work and another work.”
Id. at 101. In copyright infringement actions, “the works themselves supersede and control
contrary descriptions of them.” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602
F.3d 57, 64 (2d Cir. 2010) (quoting Walker v. Time Life Films, Inc., 784 F.2d 44, 52 (2d Cir.
1986)).
The Copyright Act makes a copyright infringer liable for “the copyright owner’s actual
damages and any additional profits of the infringer.” 17 U.S.C. § 504(a)(1). “The copyright
owner is entitled to recover the actual damages suffered . . . as a result of the infringement, and
any profits of the infringer that are attributable to the infringement and are not taken into account
in computing the actual damages.” Id. § 504(b).
DISCUSSION
For the reasons stated below, the parties’ motions for summary judgment are denied.
A.

Substantial Similarity

Meiré does not dispute that it had access to Laspata’s photographs, which served as
“research materials” for the Rimowa photoshoot. Rather, Meiré moves for summary judgment
on the basis that there is no substantial similarity between its allegedly infringing photographs
and the Laspata originals. Laspata, on the other hand, asserts in support of its motion for
summary judgment that Meiré’s photographs are “so substantially similar to the copyrighted
work[s] that reasonable jurors could not differ on this issue.” Rogers v. Koons, 960 F.2d 301,
307 (2d Cir. 1992). Summary judgment is denied to both parties on the issue of substantial
similarity because the Court finds that reasonable jurors could differ as to whether each of the
allegedly infringing Meiré photographs is substantially similar to the corresponding Laspata
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original.
The Copyright Act gives owners of a copyright “exclusive rights,” 17 U.S.C. § 106, to
protect “original works of authorship.” 17 U.S.C. § 102(a). Not all elements of a work are
entitled to copyright protection. For example, scènes-à-faire or “elements of a work that are
indispensable, or at least standard, in the treatment of a given topic—like cowboys, bank robbers,
and shootouts in stories of the American West—get no protection.” Zalewski, 754 F.3d at 102.
“The standard test for substantial similarity between two items is whether an ordinary
observer, unless he set out to detect the disparities, would be disposed to overlook them, and
regard [the] aesthetic appeal as the same.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111
(2d Cir. 2001) (alteration in original) (internal quotation marks omitted). A “more discerning”
test applies when a plaintiff’s work contains both protectable and un-protectable elements.
Gaito, 602 F.3d at 66; accord DiTocco v. Riordan, 496 Fed. Appx. 126, 128 (2d Cir. 2012)
(summary order). Courts are not to consider only the protectable elements of the two works in
isolation. Boisson v. Banian, 273 F.3d 262, 272 (2d Cir. 2001). “Such a scattershot approach
cannot support a finding of substantial similarity because it fails to address the underlying issue:
whether a lay observer would consider the works as a whole substantially similar to one
another.” Williams v. Crichton, 84 F.3d 581, 590 (2d Cir. 1996); accord Hallford v. Fox Entm’t
Grp., No. 12 Civ. 1806, 2013 WL 541370, at *5 (S.D.N.Y. Feb. 13, 2013), aff’d, 556 Fed. Appx.
48 (2d Cir. 2014) (summary order).
In applying either test, the task is to compare holistically the works’ “total concept and
overall feel . . . as instructed by our good eyes and common sense.” Gaito, 602 F.3d at 66
(internal citations omitted); accord Fulks v. Knowles–Carter, 207 F. Supp. 3d 274, 279
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(S.D.N.Y. 2016); Dean v. Cameron, 53 F. Supp. 3d 641, 646 (S.D.N.Y. 2014).
As explained in detail below, as to the photographs at issue, certain aspects of the Laspata
photographs are unprotectable scenes-à-faire that constitute stock elements of the 1920s, classic
Hollywood aesthetic. However, many similarities between the Laspata and Meiré photographs
do not involve such unprotectable elements, such that a reasonable jury could find that the
alleged copies are substantially similar to the Laspata originals. At the same time, these
similarities are not so encompassing as to persuade the Court to rule that the works are
substantially similar as a matter of law.
1. Couple and Dog in Director’s Chairs
This first pair of images portrays a young, attractive man and woman, and a dog, all
sitting on director’s chairs, facing the camera.
Laspata Photograph

Meiré Mood Image

Journey Photograph

Certain commonalities between the Laspata and Meiré images are unprotectable scènesà-faire. The leading man and ingénue are a classic Hollywood trope, as is the Jack Russell
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terrier, who appeared in The Artist and evokes Asta, the canine star of The Thin Man movies and
other movies of the era. Scenes of movie personalities in director’s chairs are likewise pervasive
stock images of the milieu. But a reasonable jury could find that other similarities are
protectable, such that the “total concept and overall feel” of the two images is the same. Gaito,
602 F.3d at 66. For instance, the composition of both images is the same -- a man on the left and
a woman on the right, each seated and looking over the back of a tall director’s chair, with a Jack
Russell in the foreground on a low director’s chair, all surrounded by props and against a fake
backdrop. In both images, the two human models are resting an elbow on the seat back. The
other items on the set -- crates, film reels, and, in the Meiré image, the Rimowa luggage -- are
arranged similarly to frame the director’s chairs. Both images employ a fake backdrop, evoking
a vintage look, though one is of a city skyline at night and the other is of the Hollywood Hills in
the daytime.
The two images also differ in ways that could lead a reasonable jury to conclude that they
are not substantially similar. For instance, the Meiré image is set in the daytime and is visually
lighter than the Laspata image, which is set at night with lit buildings in the background,
resulting in a lighter mood and greater visual contrast between the people and the background in
the Meiré image. The Laspata female is dressed in period dress, evoking the 1920s. The Meiré
female’s attire is more timeless. While all the models are turned and looking over the back of a
chair, the Laspata and Meiré models are not posing in exactly the same way. The models in the
Laspata image mirror each other, with their bodies turned toward each other but away from the
camera, each looking over one shoulder, each touching his or her own temple with a closed hand,
with their elbows almost touching each other. The models in the Meiré image are both turned
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toward each other, three-quarters toward the camera, but the man rests one arm on the back of
the chair and both his hands are visible and open. The women in the Meiré image leans on her
elbow reaching up to rest her chin on a closed hand. The models’ expressions also differ in the
Lespata and Meiré images. The models in the Laspata image are not smiling, have closed lips
and a penetrating gaze; the man’s brow is furrowed. In the Meiré image, the woman smiles
broadly, with teeth showing, while the man has a neutral expression. The dog in the Laspata
image is facing the camera, while the dog in the Meiré image turns his head to the side. The
chairs in the Laspata image bear the characters’ names, while the chairs in the Meiré image do
not.

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2. Dog and Flapper
The second pair of images portrays a woman in a flapper dress gesturing to a dog on a
director’s chair as if offering the dog a treat.
Laspata Photograph

Meiré Mood Image

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Journey Photograph

Scènes-à-faire in this second pair of images include the woman in a flapper dress, the
Jack Russell terrier on a director’s chair, and the background, which in both images evokes a
classic studio lot. Similarities that may be protectable include the general positioning of objects
in the images, with the dog on the director’s chair to the left, facing the woman on the right with
its forelimbs resting on the seat arm. The woman in both images extends an imaginary treat to
the dog with her right hand, standing with her left arm back and her left leg bent (although the
women are not identically posed). Both images frame the dog with a more distant background
and have ladders against the wall in the top right quadrant of the image.
But the two images differ in ways such that a reasonable jury could find that they are not
substantially similar. For instance, the lighting and tones in the images are almost reversed. The
models in the Laspata image are outside a warehouse in the daytime. On the top left quadrant of
the image is the entrance to a dark warehouse. The woman is dressed in black or dark colors.
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The model in the Meiré image is inside a dark warehouse or hangar, backlit by the daylight
coming through the entrance to the building on the top left and a studio light on the right which
casts long shadows in the image. The woman is dressed in white or light colors. The overall
effect is that the Meiré image is more dramatic.
3. Woman Dancing Charleston
In this third pair of images, a woman in a flapper dress dances the Charleston on a stage,
illuminated by multiple stage lights, one heel clicked up behind her.
Laspata Photograph

Meiré Mood Image

Journey Photograph

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While the image of a flapper dancing on a stage is a scène-à-faire, reasonable jurors may
differ on their view of other aspects of the two images, and thus whether or not they are
substantially similar. For example, the women in both images wear light-colored, fringed,
sleeveless dresses with short skirts; dark strappy stilettos; and head accessories--all typical of the
era but not required to evoke it. Both women are illuminated from behind by a number of stage
lights that appear as bright spots in the upper two-thirds of the frame, with a shiny reflective
floor in the bottom third, and the light diffusing through smoke in the background. But in the
Laspata image, there are more stage lights, which appear rigged to the ceiling, than in the Meiré
image, in which fewer lights are mounted on stands. The lights in both images reflect onto the
stage, but the stage in the Laspata image is more heavily lacquered, creating the effect of light on
placid water.

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4. Couple Inside Hangar
This fourth pair of images depicts a woman and a man in a hangar with a vintage airplane
in the sky and a vintage motorcycle in the hangar behind the couple.
Laspata Photograph

Meiré Mood Image

Journey Photograph

Certain common aspects of these images can be considered scènes-à-faire: the outfits
and hairstyles, and the vintage airplane and motorcycle. But the images contain other notable
similarities and differences that may lead reasonable juries to disagree as to substantial
similarity. The arrangement of the objects in each image is unusually similar: The airplane is in
flight to the left, visible through the opening of the hangar, which occupies most of the left half
of the image. The couple and the motorcycle are positioned similarly, with the motorcycle
behind the couple to the left, and the woman to the left of the man. Both images have what
appears to be a stage light behind and to the right of the couple, beaming light toward the center
of the shot. But the two couples have different demeanors, materially differentiating the mood in
each shot. In the Laspata image, the couple looks away from the camera and appears to be
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running deeper into the hangar, toward the right side of the shot, apparently away from the
airplane. In the Meiré image, the couple is walking toward the camera at a leisurely pace,
carrying luggage, as if they had just arrived from a flight.
B.

Damages

Rimowa moves for summary judgment on the ground that Laspata cannot demonstrate
damages from the alleged infringement. Rimowa argues that Laspata has not proffered evidence
to support a claim for actual damages based on a reasonable licensing fee for the images in
question, or for Rimowa’s profits attributable to the infringement. Both arguments are
unpersuasive.
1. Actual Damages
“Section 504(b) permits a copyright owner to recover actual damages, in appropriate
circumstances, for the fair market value of a license covering the defendant’s infringing use.”
Davis v. The Gap, Inc., 246 F.3d 152, 172 (2d Cir. 2001); accord Semerdian v. McDougal Littell,
641 F. Supp. 2d 233, 239 (S.D.N.Y. 2009) (“The standard for determining the fair market value
of the infringing use is an objective one – ‘the reasonable license fee on which a willing buyer
and a willing seller would have agreed for the use taken by the infringer.’”) (quoting Davis, 246
F.3d at 167). Although “the amount of damages may not be based on ‘undue speculation,’” the
fact that “finding the fair market value of a reasonable license fee may involve some uncertainty
. . . is not sufficient reason to refuse to consider this as an eligible measure of actual damages.”
Davis, 246 F.3d at 166.
Laspata has proffered sufficient evidence that a reasonable jury could use to determine a
reasonable license fee. As a matter of business policy, Laspata does not license its photographs
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to third parties or make its work available through photo licensing services because such a
practice would damage its client relationships. Thus, Laspata argues that the reasonable license
fee for the allegedly infringing photographs would amount to the fees Laspata “would charge a
hypothetical client that wanted to hire [Laspata] for an ad campaign similar to” the Rimowa
campaign, which includes a retainer fee, photography fee, styling fee and production fee.
Laspata provides estimates of these fees in a sworn declaration with invoices attached, and
concludes that the fee for a three-day photoshoot like the one Meiré conducted for Rimowa
would cost at least $330,500.
Rimowa argues that because Laspata does not license its work to third parties, it should
be precluded from seeking a reasonable license fee. The argument is unavailing because
Laspata’s restrictive licensing policy does not imply that its work has no market value. As the
Second Circuit explained in Davis, “[i]n order to make out [a] claim that [a copyright owner] has
suffered actual damage because of the infringer’s failure to pay [a reasonable licensing] fee, the
owner must show that the thing taken had a fair market value.” Davis, 246 F.3d at 166. “The
question is not what the owner would have charged, but rather what is the fair market value.” Id.
The fact that Laspata runs a business charging its clients a certain level of fees to produce images
like the ones at issue is evidence that these images have value in the market.
Rimowa further objects that Laspata’s figure is inflated because Rimowa used only four
photographs out of a series of fifty that Laspata created for Americana Manhasset’s Speechless
lookbook, and Laspata earned only $120,000 for the whole series. Rimowa contends that it
would at most be liable for an artists’ reference fee of between $1,000 and $4,000 per image.
This argument does not challenge the sufficiency of Laspata’s evidence of its actual damages.
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Rather, it is a factual dispute to be resolved by the jury in determining the amount of Laspata’s
actual damages.
2. Infringer’s Profits
“In establishing the infringer’s profits, the copyright owner is required to present proof
only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible
expenses and the elements of profit attributable to factors other than the copyrighted work.” 17
U.S.C. § 504(b). In Davis, the Second Circuit explained that the “gross revenue” under the
Copyright Act means “gross revenue reasonably related to the infringement, not unrelated
revenues.” Davis, 246 F.3d at 160; accord Graham v. Prince, 265 F. Supp. 3d 366, 388
(S.D.N.Y. 2017). The court in Davis concluded that revenues from the sale of products
promoted by an infringing advertisement were reasonably related to the infringement. Davis,
246 F.3d at 160. The court held that a designer who claimed that his eye jewelry had been
improperly used in a Gap ad “failed to discharge his burden” by presenting gross revenues for
The Gap, Inc., which included sales from other labels of the company’s corporate family that
were “in no way promoted by the advertisement.” Id. at 161. The court explained that, had the
copyright holder submitted “evidence at least limited to the gross revenues of the Gap label
stores, and perhaps also limited to eyewear or accessories . . . the burden would then have shifted
to the defendant” to prove deductible expenses and profits and revenues not attributable to the
copyrighted work. Id. at 160.
Laspata has proffered evidence that, interpreted in the most favorable light to non-movant
Laspata, is sufficient to lead a reasonable jury to conclude that Rimowa’s 2015 revenues are
reasonably related to the allegedly infringing photographs. Notably, in August 2015, Rimowa
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issued a press release touting a 33.3% increase in sales from the previous year. The press release
credited The Journey lookbook in part for the company’s strong performance: “With a new
lookbook and accompanying campaign together with store openings in prime locations . . .
RIMOWA was able to consolidate its market share at the start of 2015.” Rimowa’s corporate
designee testified that the lookbook and ad campaign were “one part of the whole game” of
Rimowa’s 2015 results. The evidence suggests that the images played a prominent role in
Rimowa’s overall 2015 advertising. That year, images from The Journey photoshoot, including
at least two of the allegedly infringing photographs, were the only promotional images Rimowa
used in all advertising worldwide. One of the photographs at issue serves as the cover image for
the lookbook. The images appeared internationally in stores, billboards, advertisements in print
and online publications and Rimowa’s website. See, e.g., Andreas v. Volkswagen, 336 F.3d 789,
796-97 (8th Cir. 2003) (reversing the district court’s decision vacating the jury award and
reinstating an award of infringer’s profits where an infringing voiceover was the “centerpiece” of
defendant’s car commercial); Silberman v. Innovation Luggage, Inc., No. 01 Civ. 7109, 2003
WL 1787123, at *10 (S.D.N.Y. Apr. 3, 2003) (Lynch, J.) (“In a case such as this, where
defendants used the infringing [images of the New York skyline] as interior décor of their
luggage stores, and did not sell the infringing items, it may well be that profits from the
infringement are not great. However, plaintiffs are entitled to recover infringing profits to the
extent that any such profits can be demonstrated, and that calculation is also reserved for a trier
of fact and is not appropriate for summary judgment.”); Hendricks v. Physicians Skin & Weight
Ctrs., Inc., No. 12 SACV 2169, 2014 WL 12561621, at *3 (C.D. Cal. Feb. 24, 2014) (denying

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summary judgment where infringing “before and after” photographs were “a central part of a
substantial advertising campaign” for a cosmetic procedure).
Laspata’s evidence is also sufficient to convince a jury of a reasonable relationship
between the alleged infringement and Rimowa’s entire 2015 revenues. First, unlike The Gap in
Davis, “the substantial portion” of Rimowa’s revenues derive from the sale of luggage. Second,
Rimowa’s corporate designee testified that “the lookbook [with the allegedly infringing
photographs] is meant to cover all products that are sold by Rimowa,” not a particular product,
line or collection, and not just the specific pieces of luggage featured in the photographs. As she
testified, the purpose of the lookbook was to “build awareness for the entire brand of Rimowa,”
not just for “a particular product.”
Rimowa argues that Laspata fails “to propose an apportionment of Rimowa’s profits
between profits attributable” to the allegedly infringing images and profits attributable to other
causes. On the contrary, this burden falls on Rimowa. Under the Copyright Act, “the infringer
is required to prove [its] deductible expenses and the elements of profit attributable to factors
other than the copyrighted work.” 17 U.S.C. § 504(b) (emphasis added).
C.

Infringement Claim Concerning the Video

Count III of the complaint asserts copyright infringement based on behind-the-scenes
video footage of the Meiré photoshoot showing Laspata images that had been digitally altered to
include Rimowa luggage. Rimowa moves for summary judgment on this count, arguing that the
use of the photographs in the video constitutes de minimis copying. Rimowa’s argument fails.
The Second Circuit laid out the standard for determining whether copying is de minimis
in Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998):
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To establish that the infringement of a copyright is de minimis, and therefore not
actionable, the alleged infringer must demonstrate that the copying of the
protected material is so trivial as to fall below the quantitative threshold of
substantial similarity, which is always a required element of actionable copying.
In determining whether or not the allegedly infringing work falls below the
quantitative threshold of substantial similarity to the copyrighted work, courts
often look to the amount of the copyrighted work that was copied, as well as, (in
cases involving visual works), the observability of the copyrighted work in the
allegedly infringing work. Observability is determined by the length of time the
copyrighted work appears in the allegedly infringing work, and its prominence in
that work as revealed by the lighting and positioning of the copyrighted work. . . .
[A]n inquiry into the substantial similarity between a copyrighted work and the
allegedly infringing work must be made on a case-by-case basis, as there are no
bright-line rules for what constitutes substantial similarity.
Id. at 217 (citations and internal quotation marks omitted); accord Gottlieb Dev. LLC v.
Paramount Pictures Corp., 590 F. Supp. 2d 625, 632 (S.D.N.Y. 2008). In Sandoval, the Second
Circuit upheld the district court’s dismissal on summary judgment of an infringement claim
where the copyrighted photograph was visible but blurred for a few seconds in the background of
a film scene, and was nearly unrecognizable. Sandoval, 147 F.3d at 218.
The use of at least one altered Laspata image in the video is not de minimis. In the video,
with a total runtime of 3 minutes and 12 seconds, the camera zooms in and focuses on the image
depicting a couple and dog sitting on director’s chairs twice, for roughly three seconds each. The
image is clearly observable and in focus both times.

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Screenshot of Video at 00:26

Screenshot of Video at 00:39

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Later, the video shows the models and crew recreating the scene on set for about five seconds,
reinforcing the prominence of the image in the video.

Screenshot of Video at 01:11

Based on the Court’s observation, the two shots focusing on the image with the couple and dog
clearly identify the image and contribute substantially to the video. See, e.g., Ringgold v. Black
Entm’t Television, Inc., 126 F.3d 70, 76-77 (2d Cir. 1997) (use of copyrighted quilt design as set
dressing for 26 to 27 seconds in a 30-minute sitcom episode was not de minimis).
Meiré also moves for judgment in its favor on Count III, asserting that it did not create or
distribute the video, nor did it review or approve the video’s content or dress the set with
allegedly infringing photographs. This argument is rejected. The allegedly infringing material
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in the video consists of mood images created by Meiré for use on set in the photoshoot. Meiré
staff were present at the photoshoot when the video was being shot and cooperated with the film
crew taking footage. A reasonable jury could find that Meiré was in a position to control
Rimowa’s use of the images and therefore could be vicariously liable for any infringement on
Rimowa’s part. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 437-38
(1984) (“[T]he imposition of vicarious liability is manifestly just [when] the ‘contributory’
infringer was in a position to control the use of [the] copyrighted works by others and had
authorized the use without [the] permission of the copyright owner.”).
D.

Motion to Strike the Diekgerdes Declaration

Finally, Defendants move to strike a declaration by Horst Diekgerdes, which Laspata
filed in support of its summary judgment briefing. Diekgerdes is the photographer who executed
the lookbook photoshoot and took the allegedly infringing photographs. Defendants assert that
the declaration should be excluded under Federal Rule of Civil Procedure 37(c)(1) because
Laspata failed to disclose him in their amended Rule 26 initial disclosures. In addition,
Defendants claim that the declaration contains numerous inadmissible statements based on
hearsay. Defendants’ motion is denied.
Federal Rule of Civil Procedure 26 requires a party to supplement or correct a disclosure
made in an interrogatory, production request, or request for admission, “in a timely manner if the
party learns that in some material respect the disclosure or response is incomplete or incorrect,
and if the additional or corrective information has not otherwise been made known to the other
parties during the discovery process or in writing.” Fed. R. Civ. P. 26(e)(1)(A). “If a party fails
to provide information or identify a witness as required by Rule 26(a) or (e), the party is not
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allowed to use that information or witness to supply evidence on a motion . . . unless the failure
was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). According to Advisory
Committee Notes for the 1993 Amendments introducing the provision, the exceptions were
added “to avoid unduly harsh penalties in a variety of situations: e.g., the inadvertent omission
from a Rule 26(a)(1)(A) disclosure of the name of a potential witness known to all parties.”
Thus, “[t]he duty to supplement a Rule 26 disclosure is only necessary when the omitted or afteracquired information has not otherwise been made known to the other parties during the
discovery process.” Marvel Worldwide, Inc. v. Kirby, 777 F. Supp. 2d 720, 727 (S.D.N.Y.
2011), aff’d in part, vacated in part on other grounds sub nom. Marvel Characters, Inc. v. Kirby,
726 F.3d 119 (2d Cir. 2013); accord Universe Antiques, Inc. v. Vareika, No. 10 Civ. 3629, 2011
WL 5117057, at *4 (S.D.N.Y. Oct. 21, 2011).
The record shows that all parties to this action were aware of Diekgerdes’s role in the
events at issue throughout this litigation. Diekgerdes was repeatedly discussed in pleadings,
deposition testimony and Meiré’s submissions in support of its motion for summary judgment.
Meiré’s responses to former party Shotview’s interrogatories, dated April 18, 2017, list
Diekgerdes as an individual likely to possess knowledge relevant to this action. Because Laspata
had no duty to supplement its initial disclosures to include Diekgerdes, Defendants’ motion to
strike his declaration is denied. See, e.g., Marvel Worldwide, 777 F. Supp. 2d at 727 (“Because
[plaintiff] became aware of [declarants] at . . . depositions, [defendants] did not have a duty to
supplement their Rule 26 initial disclosures.”).

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Plaintiffs’ contention that the Diekgerdes Declaration contains inadmissible hearsay is
not grounds to strike the entire declaration. In any event, the Court does not rely on any hearsay
in the declaration in deciding these summary judgment motions.
CONCLUSION
For the foregoing reasons, the parties’ cross-motions for summary judgment are
DENIED, Defendants’ motion to strike the Diekgerdes Declaration is DENIED, and Rimowa’s
request for oral argument is DENIED as moot.
The Clerk of Court is directed to close the motions at Docket Nos. 167-170, 179, 183,
188, 207, 218 and 224.

Dated: June 20, 2018
New York, New York

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